On 11 February 2013, CTS LTD (חברת כ.צ.ט בע”מ) filed Israel Trademark Nos. 253382 for לקטופיל and 253359 for Lactofil covering cosmetic preparations namely lotions, creams, mousses and soaps for nourishment and cleaning of the skin and face in class 3 and on 28 May 2013, Laboratorios Genesse S.L. opposed these marks.

Both parties filed their evidence in each case and on 6 October 2014, at the request of Laboratorios Genesse, the two cases were combined and a hearing was scheduled for 29 October 2014. Summaries were filed on 28 January 2015 and responses to the summaries were filed by 2 April 2015.

Background

Laboratorios Genesse is a foreign company that is part of the AC Marca group founded in 1922. The mark Lactovit is registered in many countries and covers soaps, gel, perfumes, oils, hair cream and body oils and the like.

CTS LTD is a cosmetic and pharmaceutical company that was founded in 1921 and has now started selling their products abroad. CTS LTD started selling their Lactofil line in Israel back in 1991, and own Israel Trademark No. 71373 for Lactofil in Class 5 for a pharmaceutical soap-less cleanser based on lactic acid.

In 2013 Genesse started selling Lactovit in Israel via a local distributor and CTS LTD opposed this as it considered that this infringed their trademark and sued the distributor Yaakov Yaacobi in the Tel Aviv District Court but after an agreement between the parties the case was withdrawn.

Genesse claims that it purchased the LACTOVIT mark and exclusive rights therewith from a Spanish company. The Lactovit line was launched in 1998 and has since had constantly increasing worldwide sales. It invests in R&D and protects the mark for various cosmetic products worldwide.

The Lactovit mark is well-known internationally since 2002.

Genesse tried to launch their Lactovit cleanser in Israel via Yaakov Yaakobi after testing for similar and identical product names in Israel.

Genesse further claims that CTS’s trademark application numbers 53382 and 253359 were filed in bad faith to prevent fair competition. They accused CTS of filing incomplete data and inacurate declarations. Furthermore, they allege that CTS’ Lactofil line is for treatments and not for the toilet goods in class 3 which raises issues regarding CTS’ intentions.

If a competing marks proceedings is instituted, Genesse’s marks should take precedence over CTS’ mark.

Finally, the earlier registration of Lactofil in class 5 should not prevent Lactovit from being registered.

CTS claims that IL 249389 for Lactovit is not a well known mark and was in use in Israel for a mere month. It lacks distinctiveness and thus should not be registerable.

Furthermore, CTS claims that applying the three part trademark tests leads to the conclusion that Lactovit is confusingly similar with the previously registered Lactofil mark under Sections 11(9), 11(13) and 11(14) of the Ordinance, since classes 5 and 3 relate to similar types of goods. CTS claims that Lactofil is well-known due to it being in constant use and publicized in various media.

CTS claims that the 249389 application creates unjust competition in that it could dilute the reputation enjoyed by Lactofil., since Genesse’ Lactovit is the only other product sold in Israel that starts with the ‘lacto’ prefix. For good measure, CTS alleges that the registration of the 249389 application is against the public order and thus contravenes Section 11(5) and that its usage is prohibited under section 2 of the Consumer Protection Law 1981. The labels do not fairly reflect the ingredients and it is not authorized by the Ministry of Health!

CTS deny inequitable behavior and don’t consider that when applying for accelerated examination they are obliged to relate Genesse’ application.

The Ruling

The issue is whether the marks are confusingly similar. That means to say, whether the previous registration of Lactofil in Class 5 should prevent registration Lactovit in Class 3, and whether the previous registration Lactovit in Class 3 should prevent a subsequent registration of Lactofil.

In this regard, Classes 5 and 3 cover similar goods. Neither party managed to convince the Adjudicator of intellectual property that their marks were well-known marks in the meaning of Section 1 of the Ordinance as interpreted in the Pentax and Absolut decisions.

Both products are intended for the general Israeli public. None of the evidence submitted was sufficient to prove that wither mark was really well known.

Section 11(9) prevents registration of a confusingly similar mark.

The Adjudicator went on to apply the triple test and concluded that there was no real likelihood of conclusion. Neither mark was selected in bad faith.

Conclusion

Both Oppositions were denied and all three marks were allowed to be registered.

COMMENT
‘Lacto’ means milk. Like milk or חלב or תחליב

I cannot see any justification to allow a company to monopolize the prefix in Israel, despite it being in Latin and despite allegedly no-one using it previously as a prefix in a trademark.

In Hebrew, the stress is on the final syllable not the first one as is the case in English. The similarities should be judged narrowly. The adjudicator is therefor correct and there is no real likelihood of confusion.